DCT
1:23-cv-02162
Vanocur Refractories LLC v. Fosbel Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Vanocur Refractories, LLC (New York)
- Defendant: Fosbel, Inc. (Ohio)
- Plaintiff’s Counsel: Rupp Pfalzgraf LLC
- Case Identification: 1:23-cv-02162, W.D.N.Y., 09/08/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendant regularly transacts business, supplies goods, and derives substantial revenue from sales within the Western District of New York.
- Core Dispute: Plaintiff alleges that Defendant’s modular refractory blocks for coke oven repair, and the resulting corbel structures, infringe a patent related to a system of large, pre-cast monolithic blocks for coke oven construction.
- Technical Context: Coke ovens, essential for steel production, require durable and thermally stable refractory structures known as corbels, which have traditionally been built from thousands of individual bricks.
- Key Procedural History: The complaint notes a prior lawsuit filed in April 2022 against Defendant, Stelco, and Upstate Refractory Services, which was voluntarily dismissed after a confidential site inspection. The current action appears to be based on new information, including a sworn declaration obtained from the president of Upstate following a subsequent petition.
Case Timeline
| Date | Event |
|---|---|
| 2009-05-12 | ’853 Patent Priority Date |
| 2012-09-18 | ’853 Patent Issue Date |
| 2015-10-02 | Defendant allegedly became aware of Plaintiff's technology |
| 2016-09-21 | First alleged manufacture and shipment of infringing blocks |
| 2017-05-02 | Second alleged manufacture and shipment of infringing blocks |
| 2018-10-24 | Third alleged manufacture and shipment of infringing blocks |
| 2020-03-09 | Stelco issues payment to Plaintiff for project utilizing patented design |
| 2020-04-01 | Stelco halts project with Plaintiff |
| 2020-11-24 | Plaintiff emails Stelco warning of potential infringement by new partner (Fosbel) |
| 2021-01-21 | Plaintiff emails Stelco again, informing them of infringement by Fosbel |
| 2021-10-27 | Fosbel manager allegedly confirms knowledge of patent |
| 2022-04-01 | Plaintiff initiates prior lawsuit against Fosbel, Stelco, and Upstate |
| 2023-05-22 | President of Upstate Refractory Services executes sworn declaration |
| 2023-09-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,266,853 - “Corbel Repairs of Coke Ovens,” issued September 18, 2012
The Invention Explained
- Problem Addressed: The patent’s background section describes the conventional method of repairing coke oven corbels as tremendously labor-intensive and time-consuming, requiring the assembly of hundreds or thousands of individual silica bricks in a process akin to a "three-dimensional jigsaw puzzle" (Compl. ¶41; ’853 Patent, col. 1:60-68). This high number of individual components and their associated joints creates "hundreds, and sometimes thousands, of potential failure points" for gas leaks, which reduces oven efficiency and increases operating costs (’853 Patent, col. 2:3-6; Compl. ¶41).
- The Patented Solution: The invention addresses this problem by replacing the myriad small bricks with large, pre-cast monolithic modules designed to be installed in stacked tiers (’853 Patent, Abstract). These modules have integrated passageways for gas and air that align when the tiers are assembled, drastically reducing the number of joints and potential leak points. This modular design is intended to be faster and less costly to install and to result in a more durable and efficient corbel structure (’853 Patent, col. 2:34-45). The exploded view in Figure 4 illustrates how these large, tiered modules (e.g., Tier 3, Tier 4-5) are designed to replace multiple courses of traditional brickwork (’853 Patent, Fig. 4).
- Technical Importance: The claimed modular approach provided a method to significantly reduce the downtime, specialized labor costs, and long-term maintenance associated with repairing or constructing coke oven corbels, a critical piece of industrial infrastructure (Compl. ¶¶44-45).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a corbel apparatus) and 10 (a method of constructing the corbel) (Compl. ¶¶49, 50, 138).
- Independent Claim 1 of the ’853 Patent recites the following essential elements for "A corbel":
- A first tier having first blocks, each with a first, substantially horizontal aperture and a second, substantially vertical aperture, arranged to define a first, substantially horizontal passageway.
- A second tier of blocks disposed above the first tier, with a third, substantially vertical aperture that aligns with the second aperture of the first tier to form a second passageway.
- A third passageway extending diagonally from the top of one of the second blocks to a side of at least one of the first and second blocks.
- A gas source for providing gas to the first passageway.
- The complaint reserves the right to assert additional claims, including dependent claims 2-3, 5-7, 9, and 11-17 (Compl. ¶¶25, 148).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are modular refractory blocks and the coke oven corbels assembled from them (Compl. ¶1). The complaint alleges these blocks were manufactured by Upstate Refractory Services, Inc. at the direction of Defendant Fosbel and used to construct a coke oven for Stelco Inc. in Canada (Compl. ¶¶78-79, 89).
Functionality and Market Context
- The complaint alleges that the accused blocks are large, pre-cast components designed to be assembled into a tiered corbel structure that replicates Plaintiff’s patented "Big BLOCK Solution" (Compl. ¶¶7, 78). Infringement allegations are supported by photographs, reportedly from the manufacturer's website, that depict large concrete-like blocks with various apertures and channels (Compl. ¶¶96, 107). One such photograph, labeled "Infringing Photo 2," shows blocks with both vertical and horizontal openings, which the complaint alleges correspond to the claimed apertures for forming gas passageways (Compl. p. 35, Diagram 2). The complaint positions the dispute in the context of a specific commercial project for Stelco, a major steel producer, which Plaintiff alleges it was originally contracted for before Defendant took over the project using the allegedly infringing design (Compl. ¶¶8, 89).
IV. Analysis of Infringement Allegations
’853 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first tier having first blocks, each... comprising a first, substantially horizontal aperture... and a second, substantially vertical aperture... arranged... to define a first, substantially horizontal passageway; | The accused instrumentality includes "first blocks (20)" which form a "first tier (12)" and contain a "substantially horizontal aperture (28)" and a "substantially vertical aperture (30)" that align to form a horizontal passageway. This is allegedly shown in photographs of the accused blocks. | ¶113, Diagram 2 (p. 36) | col. 8:14-25 |
| a second tier having second blocks... comprising a third, substantially vertical aperture... disposed above the first tier... to align the third aperture... with the second aperture... to form a second passageway; | The accused instrumentality includes "second blocks (60)" that form a "second tier (14)" and contain a "third, substantially vertical aperture (68)" which aligns with the vertical aperture of the first tier blocks to form a second passageway. | ¶109, Diagram 1 (p. 33) | col. 8:26-34 |
| a third passageway extending diagonally from the top of the one of the second blocks to a side of at least one of the first and second blocks; | The accused second blocks allegedly feature a cutout, identified as a "third passageway (80)," that extends diagonally from the top of the block to a side surface. | ¶109, Diagram 1 (p. 33) | col. 8:35-38 |
| a gas source for providing gas to the first passageway. | The accused blocks are alleged to form a first passageway that "is connected to a gas source," an inherent component of any functional coke oven for which the blocks are specifically designed. | ¶113 | col. 8:39-40 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges that certain cutouts on the accused blocks meet the "third passageway extending diagonally" limitation. A central dispute may be whether an open-sided notch or cutout, as depicted in "Infringing Photo 1.a" (Compl. p. 33), constitutes a "passageway" within the meaning of the claim, or if the term requires a more fully enclosed channel.
- Technical Questions: Claim 1 recites "a gas source." The complaint primarily alleges infringement by making, using, and selling the blocks themselves. For direct infringement under 35 U.S.C. § 271(a), a key factual question will be whether Defendant makes, uses, or sells the fully assembled corbel connected to a gas source within the United States. The complaint alleges assembly in Canada, making the claims under 35 U.S.C. § 271(f) particularly relevant.
V. Key Claim Terms for Construction
The Term: "passageway"
- Context and Importance: The term appears in three of the four main elements of Claim 1. The infringement allegations rely on interpreting apertures and open-sided notches in the accused blocks as the claimed "passageways" (Compl. pp. 33, 36). The construction of this term is therefore critical to determining whether the accused blocks meet these limitations.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification uses terms like "passageways," "orifices," and "apertures" to describe various channels for gas and air flow, suggesting the term may not be limited to a fully enclosed duct (’853 Patent, col. 4:11-16). For example, it describes diagonal apertures aligning with "angled notches" to form "air passageways" (’853 Patent, col. 7:15-19), which could support construing an open notch as a "passageway."
- Evidence for a Narrower Interpretation: The patent also refers to "gas lines and flues," which may imply more defined, enclosed structures (’853 Patent, col. 6:45-46). A defendant could argue that to solve the leakage problem of the prior art, the claimed "passageways" must be construed as structures that more effectively contain gas flow than an open notch.
The Term: "substantially" (as in "substantially horizontal," "substantially planar")
- Context and Importance: This term of degree appears repeatedly in Claim 1 and governs the required precision of the blocks' features and their alignment. Practitioners may focus on this term because the accused products are large, cast blocks where perfect geometry and alignment may not be achievable or necessary for function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The overall purpose of the invention is to simplify construction by replacing thousands of small bricks with a few large modules (’853 Patent, col. 2:45-56). This context suggests "substantially" should be interpreted to accommodate reasonable manufacturing tolerances inherent in casting large blocks, so long as the overall function of creating contiguous gas and air paths is achieved.
- Evidence for a Narrower Interpretation: The patent emphasizes that a key benefit is the reduction of gas leaks, which are caused by misaligned joints in the prior art (’853 Patent, col. 2:1-6). This may support an interpretation that "substantially" requires a high degree of planarity and alignment to ensure the tight seals needed to achieve this objective.
VI. Other Allegations
- Indirect Infringement: The complaint places significant emphasis on infringement under 35 U.S.C. § 271(f), which governs liability for supplying components from the U.S. for combination abroad. It specifically alleges that Defendant directed Upstate Refractory Services to manufacture the accused blocks in New York and supplied them for assembly into an infringing corbel at the Stelco facility in Canada (Compl. ¶¶78, 139). The complaint alleges these components were "especially made or especially adapted for use in the invention and not a staple article" and that Defendant intended for them to be combined in an infringing manner, thereby pleading the elements for both § 271(f)(1) and § 271(f)(2) (Compl. ¶¶134, 140).
- Willful Infringement: The complaint alleges Defendant had pre-suit knowledge of the ’853 Patent. It cites an alleged incident in 2015 where a Fosbel representative was denied a tour of Plaintiff’s facility to protect the patented design (Compl. ¶¶3-4), as well as direct warnings sent to Defendant’s partner, Stelco, in late 2020 and early 2021 (Compl. ¶¶16, 20). The complaint further alleges that a Fosbel manager confirmed knowledge of the patent in an October 2021 conversation, but incorrectly stated it had expired (Compl. ¶92). Continued infringement after these events is alleged as the basis for willfulness (Compl. ¶21, 154).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be the location of infringement and the governing statute. Given the explicit allegations of supplying components from the U.S. for assembly in Canada, the viability of the claims under 35 U.S.C. § 271(f) will be a primary focus. The court’s analysis will likely turn on whether Defendant supplied a "substantial portion" of the patented invention's components from the U.S. with the requisite knowledge and intent for them to be combined abroad.
- The case will also involve a core question of definitional scope during claim construction. The outcome may depend on whether the term "passageway," in the context of the patent's specification, can be construed broadly enough to read on the open-sided notches and cutouts depicted in photographs of the accused blocks.
- Finally, a key evidentiary question will be one of proof and provenance. The complaint’s infringement theory relies heavily on photographs allegedly from a third-party website and a declaration from that third party's president. The case's trajectory will be influenced by discovery that either corroborates or challenges the authenticity of this evidence and provides more detail on the precise design and use of the accused blocks.